Whose name is it anyway?

The English law of passing off is very business-oriented. It does not generally enable a person to protect a reputation in a name unless the name is associated with a business. It is important, however, for the individual to ensure that rights in their name stay within their control. A recent case in the Intellectual Property Enterprise Court (IPEC) involving an employment solicitor illustrates the risks of allowing your name to be associated with a third party business without having appropriate contractual arrangements in place.

Ms Bhayani was an employment solicitor with a substantial reputation in Sheffield. She joined the firm of Taylor Bracewell LLP, which at the time did not have a significant employment practice, as a salaried partner. It was agreed that while there she would practise under the name “Bhayani Bracewell”.

In due course things turned sour. Ms Bhayani left and set up on her own as Bhayani Law Ltd, but Taylor Bracewell continued using the Bhayani Bracewell name for a period. Ms Bhayani sued, alleging passing off. She argued that Taylor Bracewell’s use of the Bhayani Bracewell name falsely represented that she was still involved with their business. Although in itself this argument may have had some truth in it, her claim in passing off failed. In order to succeed in passing off she would have needed to show that she owned ‘goodwill’ (broadly, a business reputation) in her name. However, at the relevant time, she had not traded under the name on her own account. As a salaried partner she had been both an employee and a partner in the firm and case law has established the general rule that goodwill generated by the acts of an employee/partner vests in the employer/partnership. (Although there are some limited exceptions to this, they are generally confined to cases involving artists and performers and where the claimant can argue that they had a separate business.) The partnership agreement also supported the proposition that goodwill was owned by the partnership.

The case is a good illustration of the difficulties of protecting a name under the English common law. This means that in situations where a name is to be used, it is important to address the question expressly by contract. This should provide for who can use the name, who will own the goodwill in the name, who may register a trade mark in the name and how it may be used after termination of the contract.